Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (No 3) [2011] FCAFC 165

Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (No 3) [2011] FCAFC 165

Claims 1-17 and claim 27 (insofar as dependent on claims 1-17) of Australian Patent No 2003259586 are invalid and should be revoked; releases of undertakings as to damages were not appropriate and must be set aside; respondents required to provide undertakings as condition of stay, but not a broader undertaking as to damages; costs proportionally awarded in line with outcome and significance of issues decided.

Jurisdiction
Australia
Judgment Date
21 December 2011
Procedural Posture
Appeal / Full Court Judgment on Appeals From Decisions of Primary Judge; Determination of Substantive, Costs, and Stay Orders
Outcome
Appeals allowed; revocation of claims 1-17 of the Patent ordered; some declarations and orders set aside; costs reallocated; stay of revocation granted on conditions.
Legal Topics
['patents' 'revocation' 'injunctions' 'undertakings as to Damages' 'costs' 'stay of Orders']
['intellectual Property' 'civil Procedure'] ['patents' 'revocation' 'injunctions' 'undertakings as to Damages' 'costs' 'stay of Orders']

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Procedural Posture

Appeal / Full Court Judgment on Appeals From Decisions of Primary Judge; Determination of Substantive, Costs, and Stay Orders

Legal Issues

  1. 1 ['Whether claims 1-17 and dependent claim 27 of Australian Patent No 2003259586 are invalid; Whether permanent injunctions and releases from undertakings as to damages were appropriate; Whether respondents should be released from usual undertakings as to damages; Costs allocation among parties; Whether stay of orders for revocation should require undertaking as to damages.']

Ratio Decidendi

Claims 1-17 and claim 27 (insofar as dependent on claims 1-17) of Australian Patent No 2003259586 are invalid and should be revoked; releases of undertakings as to damages were not appropriate and must be set aside; respondents required to provide undertakings as condition of stay, but not a broader undertaking as to damages; costs proportionally awarded in line with outcome and significance of issues decided.

Court Disposition

Appeals allowed; revocation of claims 1-17 of the Patent ordered; some declarations and orders set aside; costs reallocated; stay of revocation granted on conditions.

Orders

  • ['Declarations and orders of primary judge set aside as specified.' 'Claims 1-17 of Australian Patent No 2003259586 revoked; claim 27 declared invalid to extent dependent on claims 1-17.' 'Cross-claims dismissed.' 'Applications for compensation under undertakings as to damages remitted to primary judge.'...